PA27 – General power to amend specification after grant; PR 35, 75

Question 1

what does s27 concern

Answer 1

post-grant amendment

Question 2

When will the comptroller allow post-grant amendment

Answer 2

S27
(1) Subject to S76 (no added matter or broadening of claims) the comptroller may allow amendments on request by the proprietor
(2) … unless any proceedings are pending that may question validity

Question 3

when do amendments post grant take effect

Answer 3

S27(3)
Such amendments under subsection (1) are RETROACTIVE to the date of GRANT

Question 4

When can the comptroller amend a patent of their own volition

Answer 4

S27(4)
They can amend to acknowledge a registered trademark

Question 5

Who can oppose a post-grant amendment

Answer 5

S27(5)
A third party ay oppose a request of subsection (1)

Question 6

What will the Comptroller consider with post-grant amendments

Answer 6

S27(6)
In considering whether to allow a request to amend, the Comptroller will consider the relevant principles under the EPC

Question 7

How should post grant amendments be requested?

Answer 7

R35 For both amendments under S27 and S75 (post-grant amendment and amendment during invalidity proceedings)
(1) The proprietor must:
a) request it in writing
b) identify the proposed amendment
c) give reasons for it
(2) by e-file if possible

Question 8

What additional things may be required by the Comptroller when considering a post-grant amendment

Answer 8

R35(3)
The comptroller may require the amendment be shown in a copy of the specification

Question 9

How should post-grant amendments be requested for EP(GB) patents

Answer 9

In the same way as non EP patents, but R37(4)
If it was originally published in another language, provide a TRANSLATION of the original and amended portions of the text
(5) and the Comptroller may give subsequent directions as they see fit (e.g. translation of more of the original spec if needed)

Question 10

What happens when a post-grant amendment is approved

Answer 10

R35(6)
the Comptroller, or court (S75), may direct that the updated specification is filed in accordance with the formal requirements of schedule 2 (conform to publication standards)

Question 11

When should section 27 not be used

Answer 11

In proceedings for infringement or revocation, S75 should be used instead

Question 12

Are S27 amendments normally allowed?

Answer 12

Whilst they are technically discretionary, they are generally allowed to enable a patent to persist in a restricted form

Question 13

Can you oppose a post-grant amendment

Answer 13

yes - applications to amend are posted in the OJ
, and details are available on the register to allow review by third parties (R75)

Question 14

What are acceptable grounds for opposition of a post-grant amendment

Answer 14

1) if it does not meet requirements of S76 (e.g. adds matter of broadens scope)
2) if the amendments would still leave the patent invalid

Question 15

What is not an acceptable ground for opposition of a post-grant amendment

Answer 15

Non-unity (see s26)

Question 16

When are post-grant amendments most used

Answer 16

i) If new prior art is cited against a corresponding overseas application
ii) If an infringer has cited art against a patent and the patentee wants to strengthen their position

Question 17

What might happen to an infringer if a post-grant amendment is accepted

Answer 17

They may infringe to different extents between publication and grant versus post-grant

Question 18

How should you act in good faith regarding possible post-grant amendments as a patentee

Answer 18

Full disclosure in good time, so not to sit on the need to amend (avoid keeping infringer in the dark, and potentially giving rise to estoppel)
Think about the effect of reporting overseas search reports.

Question 19

What are the alternatives to post-grant amendment at the UKIPO

Answer 19

for an EP(GB) EPO central amendment under Art 105(a)